Friday, January 15, 2016

Going to the mattresses without initial interest confusion

A lot of stuff going on here. The parties compete in the
market for adjustable air beds and related products. Select Comfort has a
market share of over 90% in the adjustable air bed market.It has registrations for “Sleep Number,”
“Select Comfort,” and “What’s Your Sleep Number.” Defendant Comfortaire is the second largest
market participant; Baxter developed its online advertising.It used Select Comfort’s marks as search
terms in AdWords, as did defendant Personal Comfort.

A consumer who clicked on a Personal Comfort link would see
this comparative ad:

Personal Comfort’s logo is at the top of the page, beneath
which smaller text reads “Compare Us to Sleep Number Bed®,” then “PREFERRED
OVER SLEEP NUMBER® BED.” On the left side under the bold “Compare” heading, it
reads “vs. Sleep Number’s®.” Another bold heading: “The Sleep Number® Bed
versus Personal Comfort® Bed Comparison.” Lower on the page (not shown in the
screenshot), there is another link to “Compare to Sleep Number®,” and the
following: “We invite you to do your homework and check out the competition.” At
the very bottom of the webpage, there’s also a disclaimer of any affiliation
and a link: “No affiliation exists between Personal Comfort® or Sleep Number
Bed®. No product belonging to Select Comfort® or Sleep Number Bed® is sold on
this site and any reference is for comparison purposes only. Select Comfort®
and Sleep Number Bed® are registered trademarks of Select Comfort® Corporation
you can visit them at www.sleepnumberbed.com.”

In addition, Select Comfort argued that defendants used its
marks in phrases such as “Sleep Number bed” and “Sleep Number Beds on sale” in
hyperlinks on third-party sites leading to Personal Comfort’s website. Further, Select Comfort objected to various
uses on the Personal Comfort site, including, for example, the use of “Sleep
Number Bed” in the title tag of the Internet Explorer tab; the use of meta-tags
on Defendants’ websites; and the use of “WHAT’S YOUR NUMBER?” “Number Bed” also
appears in the Personal Comfort logo:

Somewhat differently, Select Comfort objected to defendants’
use of a “lead generating” website, Mattress Quote. The Mattress Quote website
was created by defendants Baxter and Stenzel, and it allowed consumers to
obtain quotes on a number of brands, including Sleep Number and Comfortaire
products. Though it was billed as an
independent website, Select Comfort submitted evidence that when consumers
selected either Sleep Number or Comfortaire, they received a quote from defendants.
Select Comfort also submitted evidence that, in responding to a direct inquiry
from the Mattress Quote website, defendants responded purporting to be “Sleep
Number.” Select Comfort also submitted
evidence that defendants made allegedly false statements to consumers who
visited defendants’ website, called, or participated in a live chat.

The court found issues of material fact as to whether “Sleep
Number” and “Number Bed” were protectable marks, descriptive, descriptive with
secondary meaning, generic, or even suggestive (Sleep Number seems
non-suggestive for beds that are adjustable—I may not know exactly what it is,
but I immediately know there’s a range).Similarly, there were fact issues as to whether defendants engaged in
descriptive or nominative fair use.And
there were fact issues on likely confusion, with some factors favoring each
side and some contested.

Notably, the court held that it was inappropriate to use
initial interest confusion in this circumstance, where the products are
expensive (the average Select Comfort bed costs between $1,600 and $2,300) specialty
products purchased online. “These factors lead to the conclusion that consumers
would exercise a high degree of care in purchasing such a mattress. Therefore,
Plaintiffs’ trademark infringement claim will require Plaintiffs to establish a
likelihood of actual confusion at the time of purchase.”This mattered in part because most of Select
Comfort’s confusion evidence, according to defendants, involved only post-sale
mistakes/confusion, and because the key question in Select Comfort’s survey
didn’t test for source confusion (again, according to defendants).Defendants’ own survey showed only 1.5%
confusion regarding the source or affiliation of their ads.

On the false advertising claims, defendants argued that
Select Comfort lacked standing.It didn’t,
because it had a sufficiently close connection to the asserted false
advertising under Lexmark, so this
serves mainly as a reminder that Justice Scalia has lost the war on calling
this inquiry “standing.”The other
aspects of the falsity claim were contested and had to go to a finder of fact.

The court likewise found that a jury would have to decide
whether “Sleep Number” and “What’s Your Sleep Number?” were famous under the
rigorous federal dilution standard.Select Comfort submitted that they had spent over $150 million in 2014
and over $1 billion since 2010 in marketing, advertising, and promoting their
Sleep Number products across many media. Publicity included “rankings in
industry magazines, positive reviews in Consumer Reports, celebrity
endorsements, and numerous mentions in magazines, newspapers, online,
television programs, and comics,” as well as other pop culture references. It
claimed over $10 billion in sales since 2010, and that in 2012, “Sleep Number”
achieved 21% unaided brand awareness and 75% total awareness.

Defendants disagreed, arguing that this wasn’t enough for
fame, since unaided brand awareness for the “Sleep Number” mark achieved under
20% awareness from 2001 to 2011, reached a high point of 21% in 2012, and
hovered around 12-13% from 2007-2009. The court declined to resolve the battle
and would let the jury decide.

Unjust enrichment went away as a separate claim because Select
Comfort had an adequate remedy at law.The Minnesota Deceptive Trade Practices Act claim survived, however,
because it might provide a separate basis to calculate damages.

Finally, the court dismissed a counterclaim based on Select
Comfort’s purchase of competitive trademarks as keywords.Select Comfort acknowledged that the keyword
purchase alone wasn’t infringing or unfair competition.“What Plaintiffs do contend is that
Defendants’ purchase of the keywords in conjunction with the resulting
advertisements is wrongful.” This is an
excellent limitation and I hope more potential plaintiffs pay heed.

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